TJSL Patent Clinic Files its First Application

How many of us have ever had an idea and thought to ourselves: “Hey, I should patent that.”

That’s exactly what inventor Kathryn Rendon is doing with the help of the Patent Clinic that is part of Thomas Jefferson School of Law’s Small Business Law Center.

Rendon’s creation is a clothing accessory she felt was “patentable.” TJSL Adjunct Professor Ross Franks, the supervising attorney of the clinic, agreed. After months of work, the patent application was filed on March 4 – the very first application filed by the new patent center.

Derek Midkiff 2L, the TJSL student who was working with Rendon on the application, got more of a real-life experience than he could have hoped for. An earlier provisional patent application that Rendon had filed on her own was due to expire the day after TJSL filed her new application.

Had that happened, Franks said Rendon would have lost her rights in the provisional application forever. “We had a deadline, it’s tomorrow.” Professor Franks said. “Miss it and you’re done.”

Professor Franks had nothing but praise for the way Midkiff handled the application…and the pressure.

“Derek got a realistic experience – especially because of the deadline pressure,” Professor Franks said. “This was a great experience for him. He did a great job with his first draft. I’m envious I didn’t get to have clinical experience like this in law school.”

“This has been an extremely beneficial learning experience,” said Midkiff, who passed the patent bar and is now a registered Patent Agent with USPTO. “It’s pretty exciting”

Among other courses at TJSL, Midkiff took Intro to Intellectual Property and Patent Law. He also took a course called Green Technology, Climate Change & IP Law.

“It’s cool to see the value of what you learned in the classroom and to be able to do it right,” Midkiff added.

Rendon first learned of TJSL’s Patent Clinic while attending an inventor’s forum. She then stopped by the Small Business Law Center booth at the San Diego Entrepreneur Street Fair in the East Village last September and picked up a patent clinic application.

The next step was a meeting with Ross Franks and Derek Midkiff to go over the patent idea thoroughly.

“He immediately saw my vision of the product,” Rendon said of Ross Franks. “He gets it. It made me feel comfortable – especially that the application would be filed the way I wanted it to be filed.”

“I saw what she saw,” Professor Franks said. “That’s my job. The client’s comfort level is very important. It’s their baby. And finding a patent attorney is like finding your first babysitter.”

The TJSL Patent Clinic had its genesis in April 2012, when Professor Steve Semeraro decided to file an application for the law school to be part of the U.S. Patent and Trademark Office (USPTO) Patent Law School Clinic Certification Pilot Program. In June, USPTO granted the application and the TJSL clinic was born and one month later TJSL’s Trademark Clinic also joined the USPTO pilot program.

TJSL is one of only 11 law schools in the entire nation and the only law school in California to have both a patent and a trademark clinic in the USPTO Law School Clinic Certification Pilot Program.

The patent program authorizes TJSL students to practice before the USPTO. As Derek Midkiff has done, they will be filing actual patent applications for actual clients and managing that application through the entire process, under the supervision of Ross Franks.

That process took up more than 100 hours of Midkiff’s time – including creating diagrams and detailed descriptions of Rendon’s product.

“She is the prototypical client – a solo inventor,” said Professor Franks. “Often inventors don’t have the resources to file a patent application. It can cost thousands in attorney’s fees. At TJSL – she paid a $500 filing fee.”

Upon hearing the clinic’s first application had been filed electronically, Professor Semeraro came to the clinic to congratulate everyone. “It’s wonderful!,” he said.

“The most consistent message we get from our alumni is that the most important thing in getting a job is real skills,” Professor Semeraro said.

As for Derek Midkiff’s experience of filing a patent application under intense deadline pressure, he says, “This is the real thing. It is so beneficial. We want to give this experience to as many students as we can.”

For Kathryn Rendon, it’s now a waiting game to hear whether her patent application will be granted. It could take as long as two-and-a-half years.

But now she knows she has done everything possible to protect her invention.